Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA544833
`ESTTA Tracking number:
`06/24/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Home Box Office, Inc.
`06/23/2013
`
`1100 Avenue of the Americas
`New York, NY 10036
`UNITED STATES
`
`Attorney
`information
`
`Alexandra Nicholson
`Davis Wright Tremaine LLP
`1633 Broadway
`New York, NY 10019
`UNITED STATES
`nytmpto@dwt.com Phone:212-489-8230
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`85500219
`06/24/2013
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`12/25/2012
`06/23/2013
`
`NONE
`
`MediaNaviCo LLC
`250 E. Olive Avenue, Ste. 300
`Burbank, CA 91502
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Apparatus for receiving, recording,
`transmission, reproduction, storage, encoding, decoding of sound or images, namely, transmitters
`and receivers of digital data, decoders aimed to receive video, photos, sound multimedia content;
`multimedia players; television sets; high definition optical discs players and recorders, DVD players
`and recorders, CD players and recorders; MP3 and MP4 players; multimedia computer tablets,
`mobile phones, digital multimedia servers; computer servers, computers; modems,
`telecommunication routers; video and television display screens; computers software and hardware,
`namely, software platforms for the digital distribution of video, data and sounds, software for
`providing access to the Internet; graphic user interface software, exposed cinematographic films, pre-
`recorded high density optical discs, DVDs, CDs featuring a wide variety of subject matters
`Class 038.
`All goods and services in the class are opposed, namely: Telecommunication services, namely,
`satellite, cable, antenna and fiber optic network transmission and broadcasting of audio-video and
`data; dissemination of information by electronic means, namely, for global telecommunication
`
`

`
`network such as the Internet or private or restricted access networks, electronic transmission for
`others of information via the internet and private or restricted access networks; transfer of video, data
`and/or voice by telecommunications; digital transmission of films, television and broadcasting, music
`broadcasting, downloading of audio video content, video on demand (VOD) transmission services;
`broadcasting of audio video programming for personal players, podcasting, communication by
`computer terminals; cable television broadcasting; voice over IP communication services
`Class 041.
`All goods and services in the class are opposed, namely: Electronic and digital distribution of
`cinematographic films; distribution of audio-visual content and data of others, namely, videos,
`television programming, motion pictures
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`3880651
`
`11/23/2010
`
`MAX GO
`
`NONE
`
`Application Date
`
`02/23/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Class 038. First use: First Use: 2010/09/08 First Use In Commerce: 2010/09/08
`Mobile media services in the nature of electronic transmission, broadcasting and
`delivery of audio, video and multimedia entertainment content including text,
`data, images, audio, video and audiovisual files by means of the internet,
`wireless communication, electronic communications networks and computer
`networks
`
`3887035
`
`12/07/2010
`
`MAX GO
`
`NONE
`
`Application Date
`
`02/23/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Class 041. First use: First Use: 2010/09/08 First Use In Commerce: 2010/09/08
`Entertainment services in the nature of providing entertainment programs and
`content, namely, films, television programs, and related clips, graphics and
`information relating to films and television programs in the fields of comedy,
`drama, action, adventure, documentary and animation, via the Internet,
`electronic communications networks, computer networks and wireless
`communications networks
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4112006
`
`03/13/2012
`
`MAX GO
`
`Application Date
`
`09/26/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`The mark consists of "MAX GO" in slanted block letters on a quadrilateral
`background.
`Class 041. First use: First Use: 2011/08/15 First Use In Commerce: 2011/08/15
`Entertainment services, in the nature of providing non-downloadable
`entertainment programs and content, namely, films, television programs and
`related clips, graphics and information in the fields of drama, comedy, action,
`adventure, animation, sports, music, variety, documentary and entertainment
`news, via the Internet, electronic communications networks and wireless
`communication networks; distribution of television programs and motion pictures
`rendered through the media of television and the Internet; television
`programming services; interactive online entertainment in the nature of a
`website containing non-downloadable photographic, video and prose
`presentations, related video clips and other multimedia materials featuring
`content from or relating to television programs and television films in the fields of
`drama, comedy, action, adventure, animation, sports, music, variety,
`documentary and entertainment news
`
`3788398
`
`05/11/2010
`
`HBO GO
`
`NONE
`
`Application Date
`
`02/23/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Class 038. First use: First Use: 2010/02/18 First Use In Commerce: 2010/02/18
`Mobile media services in the nature of electronic transmission, broadcasting and
`delivery of audio, video and multimedia entertainment content including text,
`data, images, audio, video and audiovisual files by means of the internet,
`wireless communication, electronic communications networks and computer
`networks
`
`3848513
`
`09/14/2010
`
`HBO GO
`
`NONE
`
`Application Date
`
`02/23/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Class 041. First use: First Use: 2010/02/18 First Use In Commerce: 2010/02/18
`Entertainment services in the nature of providing entertainment programs and
`content, namely, television programs, clips, graphics and information relating to
`television programs in the fields of comedy, drama, action, variety, adventure,
`sports, musicals, current events and entertainment news, documentary and
`animation, via the Internet, electronic communications networks, computer
`networks and wireless communications networks
`
`U.S. Registration
`No.
`Registration Date
`
`3848514
`
`09/14/2010
`
`Word Mark
`
`HBO GO
`
`Application Date
`
`02/23/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`The mark consists of the words "HBO" and "GO" in which the letter "O" in both
`these words contain a circle within the "O".
`Class 038. First use: First Use: 2010/02/18 First Use In Commerce: 2010/02/18
`Mobile media services in the nature of electronic transmission, broadcasting and
`delivery of audio, video and multimedia entertainment content including text,
`data, images, audio, video and audiovisual files by means of the internet,
`wireless communication, electronic communications networks and computer
`networks
`
`3848515
`
`09/14/2010
`
`HBO GO
`
`Application Date
`
`02/23/2009
`
`Foreign Priority
`Date
`
`NONE
`
`The mark consists of the words "HBO" and "GO" in which the letter "O" in both
`these words contain a circle within the "O".
`Class 041. First use: First Use: 2010/02/18 First Use In Commerce: 2010/02/18
`Entertainment services in the nature of providing entertainment programs and
`content, namely, television programs, clips, graphics and information relating to
`television programs in the fields of comedy, drama, action, variety, adventure,
`sports, musicals, current events and entertainment news, documentary and
`animation, via the Internet, electronic communications networks, computer
`networks and wireless communications networks
`
`Attachments
`
`NooMGO.pdf(29321 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Alexandra Nicholson/
`Alexandra Nicholson
`06/24/2013
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 85/500,219
`Mark: M GO and design
`Published in the Official Gazette of December 25, 2012
`
`HOME BOX OFFICE, INC.,
`
`
`
`
`
`
`
`
`Opposer,
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`v.
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`
`
`MEDIANAVICO LLC
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Applicant.
`
`Opposition No. _______________
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`NOTICE OF OPPOSITION
`
`
`
`Home Box Office, Inc. (“Opposer”), a Delaware corporation located and doing business
`
`at 1100 Avenue of the Americas, New York, New York 10036, believes it will be damaged by
`
`the registration of the designation M GO in Classes 9, 38, and 41 in Application Serial No.
`
`85/500,219, filed by MediaNaviCo LLC (“Applicant”), and having been granted extensions of time
`
`up to and until June 23, 2013 (a Sunday) to oppose said application, hereby opposes the same.
`
`As grounds for this opposition, Opposer alleges:
`
`1.
`
`Opposer is a well-known operator of premium pay television channels which are
`
`delivered through television, the Internet and electronic communication networks, including
`
`wireless networks and mobile media services.
`
`1
`
`
`
`
`
`

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`
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`2.
`
`Since long prior to December 20, 2011, the filing date of Application Serial No.
`
`85/500,219, and prior to November 30, 2011, the foreign priority date claimed by Applicant
`
`pursuant to Section 44(d) based on Applicant’s French trademark application, Opposer has
`
`marketed, distributed and sold its premium and pay television services under the trademarks
`
`CINEMAX and/or MAX.
`
`3.
`
`Since long prior to December 20, 2011, the filing date of Application Serial No.
`
`85/500,219, and prior to November 30, 2011, the foreign priority date claimed by Applicant
`
`pursuant to Section 44(d) of the Trademark Act, based on Applicant’s French trademark
`
`application, Opposer has marketed, distributed and sold its entertainment services, including
`
`entertainment programs and content, television programs, movies and other entertainment
`
`content by means of the internet, wireless communication, and electronic communication
`
`networks including mobile communication networks under the trademarks MAX GO and HBO
`
`GO (collectively, the “MAX GO and HBO GO Marks”).
`
`4.
`
`Opposer owns applications and registrations for its MAX GO and HBO GO
`
`marks for entertainment and media services, including entertainment programs and content,
`
`television programs, movies and other entertainment content distributed by means of the internet,
`
`wireless communication, and electronic communication networks
`
`including mobile
`
`communication networks and other related goods and services with the United States Patent and
`
`Trademark Office (“PTO”).
`
` Opposer’s registrations include, but are not limited to:
`
`
`
`
`
`TRADEMARK
`
`REG. NO.
`
`MAX GO
`
`MAX GO
`
`MAX GO & Design
`
`3880651
`
`3887035
`
`4112006
`
`2
`
`

`
`
`
`
`
`TRADEMARK
`
`REG. NO.
`
`HBO GO
`
`HBO GO
`
`HBO GO & Design
`
`HBO GO & Design
`
`3788398
`
`3848513
`
`3848514
`
`3848515
`
`These registrations are valid, subsisting, and owned by Opposer.
`
`5.
`
`By virtue of the popularity of Opposer’s services offered in connection with the
`
`MAX GO and HBO GO Marks, and its advertising and promotion of the MAX GO and HBO
`
`GO Marks, Opposer has built up and now owns an extremely valuable goodwill, which is
`
`symbolized by its MAX GO and HBO GO Marks.
`
`6.
`
`Applicant’s proposed use of the M GO Mark for “Electronic and digital
`
`distribution of cinematographic films; distribution of audio-visual content and data of others,
`
`namely, videos, television programming, motion pictures” in Class 41, “Telecommunication
`
`services, namely, satellite, cable, antenna and fiber optic network transmission and broadcasting
`
`of audio-video and data; dissemination of information by electronic means, namely, for global
`
`telecommunication network such as the Internet or private or restricted access networks,
`
`electronic transmission for others of information via the internet and private or restricted access
`
`networks; transfer of video, data and/or voice by telecommunications; digital transmission of
`
`films, television and broadcasting, music broadcasting, downloading of audio video content,
`
`video on demand (VOD) transmission services; broadcasting of audio video programming for
`
`personal players, podcasting, communication by computer
`
`terminals; cable
`
`television
`
`broadcasting; voice over IP communication services” in Class 38, and “Apparatus for receiving,
`
`recording, transmission, reproduction, storage, encoding, decoding of sound or images, namely,
`
`
`
`3
`
`

`
`
`
`transmitters and receivers of digital data, decoders aimed to receive video, photos, sound
`
`multimedia content; multimedia players; television sets; high definition optical discs players and
`
`recorders, DVD players and recorders, CD players and recorders; MP3 and MP4 players;
`
`multimedia computer tablets, mobile phones, digital multimedia servers; computer servers,
`
`computers; modems, telecommunication routers; video and television display screens; computers
`
`software and hardware, namely, software platforms for the digital distribution of video, data and
`
`sounds, software for providing access to the Internet; graphic user interface software, exposed
`
`cinematographic films, pre-recorded high density optical discs, DVDs, CDs featuring a wide
`
`variety of subject matters” in Class 9 (“Applicant’s Services”) in App. Ser. No. 85/500,219 is
`
`without Opposer’s consent or permission.
`
`7.
`
`Applicant’s M GO designation is similar in sight, sound, meaning and/or
`
`commercial impression to Opposer’s MAX GO and HBO GO Marks.
`
`8.
`
`The services identified in Applicant’s M GO application are closely related to the
`
`services offered under Opposer’s MAX GO and HBO GO Marks. Applicant’s services are also
`
`within Opposer’s natural scope of expansion.
`
`9.
`
`Opposer believes that Applicant’s proposed use of M GO for Applicant’s Services
`
`may cause confusion, mistake, or deception in that consumers may be likely to believe
`
`Applicant’s Services are Opposer’s services or the goods or services of a person or company that
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`is sponsored, endorsed, authorized or licensed by, or in some other way legitimately connected
`
`with, Opposer, in violation of Section 2(d) of the Trademark Act.
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`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
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`Application Serial No. 85/500,219 be denied registration.
`
`
`
`4
`
`

`
`
`
`Please recognize as attorneys for Opposer in this proceeding Alexandra Nicholson,
`
`Deirdre Davis and Colleen M. Keegan (members of the Bar of the State of New York), and the
`
`Davis Wright Tremaine LLP law firm, 1633 Broadway, New York, New York 10019-6708.
`
`Please address all communications to Alexandra Nicholson, Esq., at the above address.
`
`
`
`Please charge the filing fee and any additional necessary fees to Davis Wright Tremaine
`
`Deposit Account No. 04-0258.
`
`
`Date: June 24, 2013
`
`
`
`5
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`

`
`
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`CERTIFICATE OF SERVICE
`
`I, Colleen M. Keegan, hereby certify that a copy of this NOTICE OF OPPOSITION
`
`has been served upon Applicant’s counsel of record at the following address:
`
`
`
` Michelle L. Visser, Esq.
`Rader, Fishman & Grauer PLLC
`39533 Woodward Ave, Ste 140
`Bloomfield Hills, Michigan 48304-5098
`
`
`via first class mail, postage prepaid, on this 24th day of June, 2013.
`
`/Colleen M. Keegan/
`
`
`
`
`DWT 22192832v1 0018723-000004
`
`6